We are happy to bring to you a guest post by Dinesh Parmar, who works with Parker & Parker Co. LLP and is one of the candidates who wrote the Patent Agent Exam 2016. In a recent post, we had brought to light the controversy surrounding the credibility of the viva scores awarded to the candidates of this exam and urged those aggrieved to challenge the constitutionality of the viva exam requirement in the court. In this post, Dinesh takes issue with the Answer Key recently published by the Patent Office and points out that answers to two of the Paper-I Set C questions stated therein are incorrect. He argues that marks should be awarded to the candidates who selected correct answers to these questions, which may help some of them clear the exam.

Patent Office has published the Answers Key of Paper-I Set C of the Patent Agent Examination 2016 here. Upon verifying, I have found that there are two questions whose answers provided by Patent Office are NOT correct. The first one is as follows:

Q 27: As per the Indian Patents Act, a resident in India:

a. Is free to file an application for patent in a foreign country without first filing an application for patent for the same invention in India.

b. Can file an application for patent in a foreign country without first filing an application for patent for the same invention in India, only under certain special circumstances.

c. Can file an application for patent in a foreign country only after filing a PCT application on same Subject matter.

(1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless–

(a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and

(b) either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.

The answer to Q. 27 should be option ‘b’ in light of the words “except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller” in Section 39(1). The question seeks to ask if and when an Indian resident can file a foreign application without first filing an application for the same invention in India and Section 39(1) makes it clear that such application can be filed in cases where written permit has been granted by or on behalf of the Controller. This, in my opinion, qualifies as a special circumstance and thus the correct answer to Q. 27 is option ‘b’ and not option ‘d’ as stated in IPO’s official answer key.

Further, Q. 27 was asked in Patent Agent Exam 2010 as Q. 8 in Part A of Paper 1. Answer to the said question has been provided by two books: Patent Agent Examination by Sheetal Chopra – Registered Patent Agent, M.Sc, MBA and Dr. Akash Taneja – M.Sc, MBA, PG Diploma in IPR Law, Master Diploma in IP, Ph.D. and other one by Nitin Sharma – BE, MBA and LLB. Both of these books are very popular and known among IP professionals. In both books, the answer to Q. 8 is mentioned as option ‘B’ (PAE Book by Sheetal Chopra and Dr. Akash Taneja at Page 249 and PAE Book by Nitin Sharma at Page 241). Nitin Sharma has also provided explanation why the correct answer must be option ‘B’.

So, how can option ‘b’ be considered as incorrect answer to Q. 27? Option ‘b’ must be considered as correct and marks must be awarded to the candidates who marked ‘b’ as the correct answer to Q. 27.

The second question is as follows:

Q.49: X decides to oppose the amendment after grant to the description of a Patent obtained by his rival Y. The options before him is:

a. File Form-7

b. File Form-14 (Patent Office’s Answer)

c. Apply for compulsory license (Patent Office’s Answer)

d. Request for hearing after filing Form 14

Here, the Patent Office’s answer ‘b,c’ is incorrect as there is no provision to apply for compulsory license while opposition to amendments has been filed. X can simply file Form-14 to oppose amendments in description and upon completion of filing evidence and other formalities, X can request for hearing under Rule 62. So, the correct answer must be ‘b,d’ only.

Option ‘c’ that states “Apply for compulsory license” is absolutely wrong. To apply for a compulsory license, one is required to file FORM-17 under Section 84(1), 91, 92(1) or 92A and Rule 96 of the Patent Rules, 2003. Thus, option ‘c’ is NOT the correct answer to Q. 49.

So, how can options ‘b,d’ be considered as incorrect answer? Options ‘b,d’ must be considered as correct and marks must be awarded to candidates who marked ‘b,d’ as the answer to Q. 49.

I have already e-mailed these questions to the Controller General of Patents and they said that these questions and answers have been prepared by experts; however, they have forwarded my e-mail to review these answers. But NO timeline has been provided as to when they will reply to me about these issues.

Many candidates of the Patent Agent Exam 2016, have been declared failed due to the VIVA marks and INCORRECT answers of IPO. Some of them have failed by a margin of 1 to 5 marks (I got a total of 148 marks and a few candidates even got a total of 149 marks). If, we can prove that the answers of IPO to Q. 27 and Q. 49 are incorrect, a total of 5 marks (2 marks for Q.27 and 3 marks for Q.49) would be awarded to those candidates who have selected CORRECT answers to these questions, which may help some of them clear the exam.

Therefore, I request the IP professionals to share their views in this regard, so that we can communicate with the IPO accordingly. Your comments and opinions would be very helpful to many patent agent exam candidates.

52 comments.

The Patent Office should expedited the procedure concerning this issue which is actually affecting many aspirants who have appeared in this examination with a bunch full of knowledge and experience.
My many known candidates (including myself) are facing issues due to a very narrow margin of either 2 or 3 marks [considered fail] wherein the situation becomes more serious wherein here we are not aware that when and how this examination will be conducted in nearby future and what will be their marking scheme or procedure. Herein future of many aspirants who are actually deserving candidates is been kept on a hold due to their lapsing of the key issues concerning with the future of many aspirants.

I also agree with this above post that both answers of patent office are incorrect. Furthermore compulsory licence is only filed after three years of grant and according to patent manual of Indian patent office these both answers of patent office are incorrect. Therefore Indian patent office has to take immediate steps for the candidates who are affected by these.

I have comment on q49 that procedure of post grant amendment opposition involves request for hearing by either parties after the filing form 14 which is mentioned in rule 81 of patent rules 2003. In addition to that these procedure of opposition does not involve or say about anything about compulsory licensing. Than how option c is right

Very good research and reasoning provided by Dinesh Parmar, Patent Office must correct the discrepancy in result and expedited the procedure concerning this issue which is actually affecting many candidates. Patent Office must accept the discrepancy in result and have to republish the Patent Agent Result on their website to avoid second controversy and litigation.

Otherwise, those aggrieved candidates who have strong reason and reasoning will have no option other than challenge those two question and answer before court of law.

The Patent office has already created controversy surrounding the credibility of the viva scores awarded to the candidates of this exam. So, that would be in favor of patent office to rectify the error immediately and publish corrected result.

Thank you for this. However, what is required is an overhaul in which the Examination is conducted. I see hardly anything being discussed in that direction. When was the last time you have seen any patent agent or a practitioner working “closed book”? I mean, who works without referring to the Act, rules, guidelines or manual of patent procedure. It could very well be that the Examiners at the Indian patent office have it all memorized. The entire paper-I of the Exam is based on memorization of the Act. Is the Examination Committee (if one exists) even serious? This shows how far this exam is away from reality. This also brings me back my memories of childhood where I was asked (forced?) to recite poetry by-heart, albeit with a right intonation. Unfortunately, much to the dismay of the patent office, adults don’t work that way, much less the patent agents and anyone working in patents. If a patent agent takes part in, for instance, the oral proceedings in the Indian patent office, does the patent office expect the agent to memorize hoards of documented evedince? Who does that?

My point is, focus on important things, and let go of the miniscule marks lost because of inaccuracy. Personally, even though I failed in this exam, I consider this as no indicator of anyone’s (or my?) aptitude to practice as a patent agent. So jog on, my dear professionals in the Indian patent arena! I’m planning to write a detailed observation and sending it to the Indian patent office. Let me know if some of you can contribute to that in the comments.

P.S. – this is just my opinion. If you have a strong counter argument, I’d be happy to hear that.

I agree with you in respect of para one of your comments, however, in all exam it is common to ask complete syllabus of subject. I think the new paper style of patent office is far better than previous one, if anyone have referred manual seriously for a week you would have got more than 60 marks in paper 1.

In respect of your para 2, I believe that it is very important thing to fight for an even single mark which not given by IPO, due to IPO’s own error. There are few candidates who got more than 80 marks in paper 1 and 51 in paper 2 and only 14 in VIVA. Now, they are failed due to less mark from 1 to 5. It is their rights to fight with IPO for that marks which they deserve. As there is hope that they will get this mark and will be declared pass.

I would love to have your detailed observation and can definitely provide inputs, too.

Can you please elaborate on: “in all exam it is common to ask complete syllabus of subject”? I’m not able to understand, perhaps, in the right spirit.

Also, I wouldn’t go to the extent of giving a blanket -cover statement: “if anyone have referred manual seriously for a week you would have got more than 60 marks in paper 1”. I’d say, to each, his own. To the extent the questions in paper-I ask for conceptual awareness that can be obtained from the manual, I agree to this point. In my opinion, I would never read the manual to “memorize” the section(s) of the Act or for that matter, the numbers of the section(s).

I suggest that without wasting time, aggrieved candidates must file WP in High Court for Incorrect answer and VIVA because Patent Office people will not give any proper reply without legal actions against them.

Candidate must request HC not only to give direction about Incorrect question and VIVA but also pass order to punish the responsible officer.

The IPO payenge agent exam is fraught with opacity and delays.
All other law exams immediately publish Master answer sheet and ask for corrections. And correct Matter answer sheet
Also IPO did not disclose results fir paper 1 and paper 2 til veer end, this could have led to manipulation of individual results to select and few favorites.

I m agree with the answers provided by author. I also got fail by very minimal marks. Even I feel that, If patent office is correcting answers once again for paper 1 then there is a very high chance of getting clear who missed by minimal marks.

I am also agree with the answers provided here. I also got fail by just 4 marks. Also, there is chance that some passed candidates with shorter range (e.g. 151-155) who have chosen wrong answers are passed due to wrong answer sheet.

Pankhuri says he received reply from patent office that the questions and answers were given by external experts and the matter has been referred to them. I am really surprised by the answer of the IPO. Why do they need to approach experts for answers to these routine questions? Are the Dy. Controllers, Assistant Controllers and examiners in the IPO are not competent to give correct answers? This is the problem of outsourcing. The outsourcing agencies forget that the ultimate responsibility lies with them. The IPO should take the responsibility and correct the matter immediately.
Now as regards the answer keys
1. I differ with Pankhuri that the answer to 27 in the key is incorrect. (b) is also not the correct answer as it does not specifically mentions what are the special circumstances. One cannot import special circumstances unless they have been specifically mentioned in the answer. The word “special circumstances” in answer (b) have been incorporated to confuse the candidates. Therefore in my opinion answer key to question 27 appears to be correct.

2. As regards answer to question 49, I fully agree with Pankjuri that (c) is totally incorrect and any examiner or officer above in IPO can confirm that. There is no necessity to refer the matter to external sources. The amendment of description after grant of the patent has nothing to do with compulsory licence and hence that option as correct answer is ruled out.

I have also carefully studied the analysis of the viva marks put on this blog and I am totally convinced that the award of marks at viva at different centres have been fraught with arbitrariness to the extent of almost 25% whereas candidates in Mumbai office have failed by 2%. It will be easy for any judicious mind to conclude that something gravely wrong has been done to the candidates in the Mumbai centre as compared to the candidates of the other centres. As many as 59 candidates have failed because of viva in Mumbai centre. If the matter is taken to courts, I feel there is every chance that the court may award relief to candidates securing an aggregate of 145 marks and above. This is my personal opinion.

In respect of question 27, in my opinion b is only correct answer as if you have received permission from IPO, you can file patent outside in India. There is no provision that resident cannot file patent application outside India, other than secrecy direction issuance provision. So, that mean if resident have permission he can file application outside India without filing in India. This permission can be considered as special circumstance or this question 27’s and its options must be considered invalid.

However, as you can see there are two author who are of same opinion of “Special Circumstance”, other than them two other persons who published answer key at their end on SpicyIP have also selected B.

So, how many people can be wrong considering “special circumstances” a permission from IPO. At the end it is matter of interpretation by different person in different way. Here in this case as of now people are highly qualified and experiences of many years and in favour of “B”

I had also answered b for Q27 and b, d for Q 49 and also verified the same with Patent Act and Rules. With such erroneous answer key I doubt the credibility of Patent Agent Examiners of their knowledge of Patent Law and efficiency of Controller’s office which is conducting this examination.
In my viva exam, I had answered all the questions correctly still was awarded only 19 marks. I want to know the correct answers (which Examiners think) from the Examiners who had examined me. Is there any way to find out about the same?

Hi Meera, IPO people are not accepting their mistake in both questions which are completely based on Patent Act and which has been proved correct here. Candidates has very strong reason and higher chances to win case before court of law incase IPO not willing to correct their error.

They will not accept they discrimination done by them to candidates in VIVA, too, though they did and Smit Raval has proved the same by providing data. Here candidates can also go before court of law for description done with Mumbai Candidates.

I think, we all candidates have no option other than taking legal action against IPO and responsible officers.

Let us hope that IPO will rectify their error within next week, otherwise, before court they will not be able to stand for few minutes and that would be very shameful to them.

Is there any reply from patent office for RTI & petition? I think IPO is not interested to deliver work. No responsibility at all. Members from Panel 1 at Mumbai office were worst & asked unnecessary questions whereas panel 2 focused on syllabus. DO anyone know panel members name & profile?

Firstly I am not aware as to why you don‘t want to disclose your identity.

Now as regards question 27 and the options therefor, I again want to reiterate that this happens when the matter is out sourced. I am also of the opinion that the options given have not been correctly drafted. However I cannot agree that one can import the circumstances provided in the Act into the options. If the paper setter were to be more precise and did not want to provide options which are confusing, he should have given the circumstances as provided in the Act.

Therefore the interpretation of the options given should be strict unless specific instances are given and therefore to a person known in the art option (b) is also incorrect and therefore option (d) is correct.

I have myself been a setter at various levels of examinations (not in the patent office) and therefore well aware as to how the setter wants to confuse the candidates using such ideas so as to test their knowledge. Therefore, despite two other agreeing, I respectfully disagree and maintain that the answer to 27 is correct as given by IPO.

As regards, Q. 49 the answer (c) given is blatantly incorrect as the correction has nothing to do with the compulsory licence. Here again given such option in various options is not incorrect but giving answer (c) as correct is totally incorrect.

I respect your comments and opinion on Q 27. However, I am opinion of that option (d) cannot be correct because of (b) is incorrect. There is no restriction on resident Indian to file patent in foreign, they definitely can, by providing fulfillment of requirements of Section 39 and that requirements can be considered as “certain special circumstances”. So, if the options given have not been correctly drafted, IPO cannot treat the answer (b) as incorrect.

Section 39: Residents not to apply for patents outside India without prior permission. –
(1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless–

(a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and

(b) either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.

Even I have been paper setter for quite a number of years and examiner also for various exams and I know pretty well the techniques to puzzle examinee to check his/her level of understanding. That is why, I quote Section 39 which clearly indicates the circumstances when a resident of India can file an application for patent in a foreign country without first filing an application for patent for the same invention in India, only under certain special circumstances. Thus choice b is correct option.

I think, we should become a team and file petition against IPO. Due to this not only we get benefit but also in future, IPO will take care of these same mistakes which are continuously repeated time to time.

I appreciate the responses given by the experts. I too agree with the author’s answer and i am also one of them aggrieved who failed the exam just by 2 marks. I request author not to wait for patent office correction. We should come on single platform i request author to form a whatsapp group for those who are affected or missed by close marks. We will decide in closed sharing platform then will file the petition. I request other aggrieved candidates to be part of the group. Lets do it!!!

There is already a Whatsapp group formed to deal with this issue. If you are interested to be a part of it then kindly send your request to Smit Rawal on 8000428807.
Victory lies with unity.
Let us all come at one platform and raise our voice against this policy matter.

i think several persons are suffering due to improper and incorrect result declared by the patent office, therefore writ petition be filed before Delhi High Court for appropriate directions otherwise the certificates are likely to be issued

I agree with the answers of Dinesh Parmar. I have noticed that all have agreed that answer of IPO to Q49 is wrong, however there is a slight controversy with regard to the answer of IPO to Q27.

The option d to Q27 of IPO is wrong as the option b refers to ‘special circumstance’. It is true that an applicant can file an application abroad only if the conditions under Sec. 39 are fulfilled which being the only special circumstance. Thus Sec. 39 is an exception to the general rule. Option b refers to a special circumstance which is detailed in Sec. 39 of the Act, hence option b is correct.

IPO will not accept its mistake as they have already declared the result based on the wrong answer key. Only option left is by way of WP.

Patent office are changing the way of working now a days and they are also seening that this erroneous result affect future of many candidates. Therefore hope they will soon rectify this error as soon as possible. Every one needs good criticism for their improvements. Hope they will improve by seeing above post.

Patent Office must STOP accepting or HOLD application for registration of patent agent as above question may affect many candidates result, some of them might be passed or failed due to wrong answer key.

So, it is in favour of patent office to stop registration of patent agent and republish the corrected result immediately.

Otherwise, such action of patent office will provoke aggrieved candidate to file WP before High Court and Patent Office will not be able to give proper reply or explanation to this issue which is clearly as per Patent Act in favour of aggrieved candidates.

I also completely agree with both answers explained, here. Further, for Q:27, if patent office claims “d” option means that NONE can file patent application outside India without filing it the same in India. Then, what is worth of form-25?

There is a news that IPO has replied that Question and Answers matter is under consideration and will decide within this week.

Let us hope for best and positive action as reasoning provided by Dinesh Parmar is enough to prove the truth. To avoid litigation, IPO must republish the result immediately and that will be beneficial to both IPO as well candidates.

IPO people are smart enough, i am sure they will correct their mistake and republish result in this week. Because, they know it very well that if any one will got through by Patent Act, both answer are correct and IPO can’t deny that, otherwise it is question on their Patent Law knowledge and experience of many years.

So, i strongly believe and opinion of that IPO will correct error and will do justice with candidates and that will save IPO’s own reputation without being defamed by court.

Patent office is aware about the situation as erroneous result affect future of many candidates. Furthermore now a days quick steps are taken by the patent office and newly appointed Controller General of Patents, Designs & Trade Marks. Therefore considering above situation its good that patent office will correct the error as soon as possible. Hope for best.

If question and answer matter is under consideration by IPO then obviously the result shall also should be reconsidered. In such a case the registration of patent agents should also be stopped with immediate effect.

If question and answer matter is under consideration by IPO then obviously the result also should be reconsidered. In such a case the registration of patent agents should also be stopped with immediate effect.

Patent office knows present situation very well and they are started acting positive way. No one want to spoil future of candidates. We have faith in patent office and they will come out with best solution of this situation by taking it in a positive way.

Finally, IPO have admitted their clerical mistake for Q 49 and corrected and few candidate declared passed. However, they haven’t provided any clarification about Q 27. They just declared that error was in Paper Set C only.

So, still the issues is not resolved yet for Q 27.

I have also heard that few candidates also decided to file WP for VIVA issues. So, i suggest them to file WP for interpretation of Q 27 and justice in VIVA Exam.

One small positive step by IPO is truly very encouraging . I would like to request IPO to revise mark list of all after reviewing the answer scripts in light of revised answer key. Decision on Q27 should also be taken soon. In such scenario, the notice for registration of passed candidates should be postponed for the time being till clarity in answers, result and Mumbai Viva problems is achieved.

I agree with Patent Office with regard to Question 27, where Option (d) is correct. ‘Special Circumstances’ cannot be considered as “written permit sought in the manner prescribed and granted by or on behalf of the Controller”.

Section 39 clearly outlines the special circumstances. That is why correct answer to Q. 27 is option ‘b’ and not option ‘d’ as stated in IPO’s official answer key.
It is very common that while setting MCQ based question paper such choices are given to test the understanding of the subject not just at the face value.
I agree with the answer provided by Mr.Dinesh.

I strongly believe that Q 27 answer must be (b) only. One more strong reason other than Patent Act Interpretation found on DIPP website, which has been prepared by DIPP or in support of IPO.

Refer question number 50 and 51, where they are clearly talking about circumstance, The option given in both the question are type of Special circumstances, the question and answer it self that states.

Dear Fact finder,
I am not agree (including many of us) with you as the published answers itself indicating that they are circumstances not the special circumstances. Special circumstances are not defined anywhere in this published post.
Therefore answer of patent office is correct as you have provided proof.

To me, answer provided by Mr. Dinesh look perfect. Patent office must justify, if they think otherwise. Also, I strongly believe that there is immediate need to revamp the examination procedure to be more transparent and accurate. I am sure that PO will investigate this and will bring a solution.

I have filed writ petition before Mumbai High Court in respect of Question No. 27 and urged for remedy and had argued that marks should be awarded to the candidates who selected correct answers to question No. 27.

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Leading IP Academics Fired

This protest petition against unfair dismissals of Prof. N. S. Gopalakrishnan, Ministry of Human Resource Development (MHRD) Chair Professor at Cochin University of Science and Technology (CUSAT) and Prof. Yogesh Pai, MHRD Chair Professor at National Law University at Jodhpur, is now closed.

It was posted on SpicyIP blog on August 28, 2013 by Prof. Shamnad Basheer. Link to petition here: http://spicyipindia.blogspot.in/2013/08/leading-ip-academics-fired-protest.html